Failing to follow Rule 34’s procedures can result in having to produce ESI a second time in a different format

December 4th, 2009 | By Steve Puiszis

Covad Communications Co. v. Revonet, Inc., 260 F.R.D. 5 (D.D.C. 2009); Cenveo Corp. v. Southern Graphic Systems, 2009 WL 404 2898 (D. Minn. Nov. 18, 2009)

Because the production of electronically stored information (ESI) can occur in various formats, Rule 34 sets up a process through which the parties are supposed to resolve their disputes over the format of production. Rule 34(b)(1)(C) permits the requesting party to specify the format in which to produce the requested ESI. The producing party can either agree to produce the ESI in the requested form or can object to the proposed format. Rule 34(b)(2)(D) specifies that when either the requesting party fails to specify a production format in its request for documents or when the producing party objects to a specified format, the producing party is obligated to identify the format in which it proposes to produce the requested ESI. If the parties are unable to agree on a format, the Rule contemplates that a court will then resolve the issue, but is not bound by either party’s proposed production formats.

Rule 34 contemplates that the parties will resolve their disputes over the format of production before any production occurs. Indeed, the Advisory Committee Note to Rule 34 explains: “Stating the intended form before production occurs may permit the parties to identify and seek to resolve disputes before the expense and work of the production occurs.”

When a party unilaterally produces ESI in a format of its choice without providing the prior notice contemplated by Rule 34(b)(2)(D), the Advisory Committee Note to the Rule further explains that the producing party runs the risk that a court may conclude the ESI was produced in a format that was not reasonably usable and may order that it be reproduced in a different form. That very nightmare occurred in both of today’s featured decisions and the Covad Communications decision provides a textbook example of the type of problem that can occur when a party has to produce its ESI a second time in a different format.

Requests for production in “native format” are unambiguous

In Cenveo, the defendants requested that the plaintiff produce its electronic documents in their native format. Plaintiff produced their documents as Adobe portable document format (.pdf) images, which was not the native format of the documents. In its response to the defendant’s motion to compel, plaintiff raised an argument that can best be described as “Clintonesque.” Plaintiff argued that the defendants did not define the term “native format” in their production request, and therefore, the .pdf format was an acceptable form of production.

The court in Cenveo summarily rejected that argument finding the term “native format,” as used in the defendants’ production request, was unambiguous. The court observed that the term “native format” has been frequently used in various reported decisions and “the term is frequently used in secondary materials that are readily available and familiar to attorneys.” For example, in Aguilar v. Immigration & Customs Enforcement Div. of U.S. Dept. of Homeland Sec., 255 F.R.D. 350, 353 n.4 (S.D.N.Y. 2008), the term “native format” was defined as the “default format of a file,” which is “provided through the software program on which it was created.”

Because plaintiff in Cenveo: (1) failed to object to producing documents in their native format; (2) failed to notify the defendants of the production format plaintiff intended to use before producing its ESI, and (3) because the plaintiff failed to present any argument explaining why it could not comply with the production format specified in defendants’ original discovery request, the court concluded that production in its native format was warranted. Therefore, it ordered the plaintiff to reproduce complete, non privileged documents responsive to the defendants’ production request in their native format.

A party should preserve the integrity of its ESI once a production has occurred

In Covad Communications, defendants made 35,000 pages of emails available to the plaintiff in hard copy and the court directed that they be produced in their native format. Subsequently, plaintiff filed a motion to compel arguing the defendant failed to produce all of those emails in their native format. The defendant explained that the database platform which it originally used to search for documents was only capable of exporting them into an HTML format. Therefore, the defendant had to use a different platform to produce the emails in their native state, as .pst files. Therefore, the defendant could not exactly rerun the original search. In response to plaintiff’s motion to compel, defendant argued it would be too burdensome for it to cross reference its electronic production against the hard copies of the emails to determine how many and which emails were missing.

While the court in Covad recognized the difficulty in identifying which emails had not been produced in their native state, the court also noted it was a burden of the defendant’s own making. It concluded that the plaintiff should not be penalized for the defendant’s “failure to maintain its discovery materials in some sort of organized fashion or keep some records of its own actions in this lawsuit.” The court observed that Wyeth v. Impax Labs, Inc., 248 F.R.D. 169, 171 (D.Del. 2006), similarly held the “producing party must preserve the integrity of the electronic documents it produces. Failure to do so will not support a contention that production of documents in [its] native state is overly burdensome.”

The production format may not degrade the data’s searchability”

In Covad, the defendant produced 2,832 pages of spreadsheets as paper printouts. Plaintiff contended that spreadsheet printouts were useless because they run horizontally across several sheets of paper “resulting in a sea of seemingly random numbers and data” with no column headings or identifying information. Defendant advised that plaintiff “could paste these hundreds of pages together.” The court noted that Rule 34 requires that documents that were originally created in an electronic format must be produced in the form in which they are “ordinarily maintained or a reasonably useable form.” The court recognized that the spreadsheets were not ordinarily maintained in a paper format, and concluded that their production in a paper format was not a reasonably useable form of production.

The court in Covad noted that the Advisory Committee Note to Rule 34 provides that if a party maintains its ESI in a format that is electronically searchable, it may not produce that ESI in a form that removes or significantly degrades this feature. The defendant’s spreadsheet production clearly violated that principle and the court aptly summarized its feelings about this production format dispute:

Understandably, taking an electronic document such as a spreadsheet, printing it, cutting it up, and telling one’s opponent to paste it together again, when the electronic document can be produced with a keystroke is madness in the world in which we live.

Should the production format really make a difference?

While Rule 34’s procedures are not difficult to understand and apply, many parties and their counsel simply aren’t following them. At an ediscovery seminar earlier this year, an audience member asked me why should the production format make a difference. I explained that there are pros and cons to various production formats and that in the minds of many, the production format does make a difference.

Typically, parties objecting to the production of ESI in its native state argue that documents cannot be bates numbered or redacted without altering the original, they can be altered after production occurs, they contain metadata and may also contain embedded comments. Additionally, when a document is created in a unique or proprietary format, specialized software may be needed or the data may have to be translated into a different format simply to view it. While none of these issues are insurmountable, they do require discussion and agreement between the parties to resolve these difficulties.

Parties who object to a native production will explain that these issues are not presented when ESI is produced in an imaged format – as a .pdf or in a Tagged Imaged File Format (TIFF). However, objections to production of documents in an imaged format are that the images lack any metadata and cannot be electronically searched. These hurdles can be overcome by the addition of a load file containing agreed upon fields of metadata and extracted text or optical character recognition (OCR), which makes the imaged documents electronically searchable. Aguilar, 255 F.R.D. at 353, 356. However, producing ESI in an imaged format is more expensive and can take longer to complete. Again, these points require discussion between the parties, which is why Rule 34 requires the parties attempt to agree on a format before production occurs.

Typically fights over production formats boil down to production of metadata. Obviously, metadata may be discoverable “if it is relevant to the claim or defense of any party and is not privileged.” Aguilar, 255 F.R.D. at 355. Thus, it is subject to litigation hold requirements. Williams v. Sprint/United Mgmt. Co.,230 F.R.D. 640 (D.Kan. 2005). The discovery of metadata is also subject to Rule 26(b)(2)(C)’s proportionality standard. Aguilar, 255 F.R.D. at 355. Some forms of metadata may provide relevant information in litigation, such as when “the authenticity of a document is questioned or if establishing ‘who received what information and when’ is important to the claims or defenses of a party.” Aguilar, 255 F.R.D. at 354, quoting Hagenbuch v. 3B6 Sistemi Elettronici Industriali S.R.L., 2006 WL 665005 at *3 (N.D.Ill. Mar. 8, 2006). However, there are different types of metadata which vary in their potential importance to litigation, and thus, their discoverability.

System metadata identifies the author of a document, the date it was created or modified, its title, subject and size, as well as the names of the persons who revised and/or who last accessed the document. Application metadata, “reflects modifications to a document such as prior edits or editorial comments, and includes data that instructs a computer how to display” a document. Embedded metadata “include spreadsheet formulas, hidden columns, externally or internally linked files (such as sound files), hyperlinks references and fields, and database information.” Aguilar, 255 F.R.D. at 354-55 (discussing when and under what circumstances, application metadata, system metadata and embedded metadata may be discoverable). They are not treated the same by courts. “[T]he more interactive the application, the more important the metadata is to understanding the application’s output.” Williams, 230 F.R.D. at 647.

A number of district courts have questioned the need for metadata in litigation. In Wyeth v. Impax Laboratories, Inc., 248 F.R.D. 169 (D.Del. 2006), one court observed: “Emerging standards of electronic discovery appear to articulate a general presumption against the production of metadata.” Another district court noted “[i]n most cases and for most documents, metadata does not provide relevant information.” Kentucky Speedway, LLC v. NASCAR, 2006 U.S. Dist. LEXIS 92028 at *24 (E.D.Ky. Dec. 28, 2006). In Michigan First Credit Union v. Cumis Ins. Society, Inc., 2007 WL 4098213 at*3 (E.D.Mich. Nov. 16, 2007) a court refused to order production of metadata because it would be overly burdensome with no corresponding evidentiary value. While these decisions were impacted by the timing of the request for metadata, they do reflect the concern of some courts over the need for its production.

So, a party and its counsel should address their preferred format of production before the initial discovery conference with opposing counsel. Be prepared to discuss these issues with opposing counsel and provide notice of your proposed production format before producing any ESI. If metadata is the sticking point, consider the type of metadata that is being sought, whether its value to the case is proportional to the amount in controversy, and whether it is worth fighting over. By taking those steps, you can avoid the unnecessary expense of potentially having to produce ESI a second time to your opponent.

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